Ex Parte Mathea

Board of Patent Appeals and Interferences

Jan 27, 2010

11081464 (B.P.A.I. Jan. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HANS MATHEA
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Appeal 2009-008784
Application 11/081,464
Technology Center 1700
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Decided: January 27, 2010
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Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).

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The Invention
The Appellant claims an apparatus for the precise positional joining of
two webs. Claim 1 is illustrative:
1. Arrangement for the precise positional joining of a first material
web (1), comprising sections of a section length (A1), each including an
element (B), and a second material web (2), having marks (2a) disposed at a
predetermined distance (A2) from one another, which, except for a possible
difference (D), corresponds to the section length (A1), said arrangement
comprising a first device (3), by which the two material webs (1, 2) are
joined, a transport device (5), by which the two material webs (1, 2) are
advanced section-wise by the predetermined distance (A2) and a second
device (4), by which an element (B) is applied to the first material web (1)
whenever, after the advancement of the two material webs (1, 2) by a
section, the length of the first material web (1) between the first device (3)
and the second device (4) corresponds to a multiple of the section length
(A1) plus possibly an offset which is adjustable by an offset arrangement (6,
6a), and a sensor (7) by which the difference (D) can be determined and the
offset is adjusted by the offset arrangement (6, 6a) dependent on the
difference (D).

The References
Donnet 4,018,028 Apr. 19, 1977
Woolwine 5,964,970 Oct. 12, 1999
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1
and 2 over Donnet in view of the admitted prior art, and claims 3-5 over
Donnet in view of the admitted prior art and Woolwine.
OPINION
We reverse the Examiner’s rejections.

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Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a sensor capable of determining
an offset between sections of two webs being joined together, or an offset
arrangement capable of adjusting the offset?

Findings of Fact
Donnet discloses “techniques for registering heat-sealable, stretchable
lids with mating product-filled containers prior to the heat-sealing operation”
(col. 1, ll. 16-18). A section of a strip (2) of lid material is stretched between
two detectable markings (2a) thereon at a stretching station (PE) such that
the length of the section is increased from an initial unstretched distance (P)
to a stretched distance (d) equal to a trough (1a) interval in a ductile strip (1),
each trough corresponding to the bottom portion of one of the containers
onto which a lid is to be heat sealed at a heat-sealing station (PS) (col. 3,
ll. 28-36; col. 4, ll. 16-19). “Each of the successive preformed troughs 1a is
indexed into the heat-sealing station PS through a distance equal to the
trough center distance d by means of an advancing mechanism consisting of
a piston-type pneumatic ram 26 mechanically coupled to a bracket 27
adapted to grip the successive troughs 1a” (col. 4, ll. 35-40). “[T]he
facilities for stretching the strip 2 so that the initial center distance between
the detectable markings 2a thereon is increased to the required distance d for
registration with the troughs in the heat-sealing station PS is accomplished
independently of the advancing mechanism 26 and 27” (col. 4, ll. 52-58).
Initially a “photocell assembly 14 is adjusted in a direction parallel to the
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path of movement of the underlying strip 2 so that at the end of an indexing
movement through the distance d by the advancing assembly 26, 27, one of
the markings 2a on the strip 2 is in exact alignment with a working axis 51
(FIG. 3) of the photocell 14” (col. 6, ll. 15-21). “Since each movement of
the strip 2 at the output of the station PE will be through the distance d, and
since at the conclusion of each such movement a succeeding portion of the
strip 2 will be elongated in the station PE to the length d, each marking 2a
on the portion of the strip 2 at the output side of the station PE will come
into registration with the photocell 14 precisely at the end of the indexing
movement of the advancing means 26, 27” (col. 6, ll. 37-45).
The admitted prior art relied upon by the Examiner (Ans. 4) is
(Spec. 2:20-33):
US 5,964,151 for example discloses an arrangement for a position-
accurate imprinting of an endless foil without markings, by which
imprints of a first predetermined length are applied to a metal foil and,
after being imprinted, the foil is cut into sections of a certain
predetermined length by a cutting device so that the imprints must be
applied to the foil accurately between the cuts.
The known arrangement includes a printer which has an input
for initiating a position-accurate printing procedure. Furthermore,
there is a sensor which provides at its output a signal when the length
of the foil between the cutting device and the location corresponding
to the beginning of a section to be imprinted is a predetermined
multiple of the second predetermined length.[1]

1 The Examiner does not rely upon Woolwine for any disclosure that
remedies the deficiency in Donnet and the admitted prior art as to the issue
set forth above (Ans. 5). Hence, we do not further discuss Woolwine.
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Analysis
The Appellant argues:
What happens for example when, in Donnet, the distance between the
troughs 1a changes at some point for some reason? Then all
subsequent cover sections will be improperly applied. In Donnet, the
detectable markings on the strip 2 are detected and the strip section P
is pulled and stretched until the mark 2a on the strip 2 reaches a
certain point, that is, the cover strip section has a certain length d. It
does not take into consideration any position error of the strip 1 to
which the cover strip 2 is to be attached. It is only ensured that the
cover section of the length P is stretched to the proper length d before
it is attached to the strip 1 provided with the troughs in the sections of
the equal length d of the strip 1. [Br. 5]
. . .
There is actually no possibility of sensing a position difference
between the two foils and no possibility for correction. It is simply
assumed that the cover is properly applied and sized if it is stretched
to the degree that the mark thereon reaches a certain point. [Br. 5-6]

The Examiner argues (Ans. 6):
[C]laim 1 does not specifically teach that a length differential is
necessary. In fact, in reciting “except for a possible difference (D)” in
a first web and an offset, dependent on the difference, that is
“possibly” present (claim 1, lines 5-6 and lines 14-16), the difference
need not exist.
With respect to the teachings by Donnet, the location of
markings of a distance ‘P’ on a strip is determined, to use as a lid for a
container, prior to being clamped and stretched out to a distance ‘d’,
according to the width of the container. Therefore, in aligning the two
webs properly, the possible length differential is taken account for.

The Examiner has not provided support in Donnet for the “in aligning
the two webs properly” phrase in that argument. Donnet merely makes the
portion of strip 2 between detectable markings 2a equal to the distance “d”
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of the trough 1a intervals in strip 1 (col. 3, ll. 28-36). Donnet’s system for
stretching to distance “d” the portion of strip 2 between detectable
markings 2a operates independently of mechanism 26, 27 for advancing
strip 1 having troughs 1a therein (col. 4, ll. 52-59). The Examiner has not
established that Donnet’s system provides capability for detecting or
adjusting for any misalignment between the portion of strip 2 between
detectable markings 2a and the trough 1a over which it is attached.
Although, as argued by the Examiner (Ans. 6), the Appellant’s
Claim 1 does not require an offset, the claim requires an apparatus having
the capabilities of detecting an offset and adjusting it, and the Examiner has
not established that the applied prior art discloses, or would have rendered
prima facie obvious, to one of ordinary skill in the art, an apparatus having
either of those capabilities.
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner has not provided the required articulated reasoning with
rational underpinning.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a sensor capable of determining
an offset between sections of two webs being joined together, or an offset
arrangement capable of adjusting the offset.
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DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1 and 2 over Donnet
in view of the admitted prior art, and claims 3-5 over Donnet in view of the
admitted prior art and Woolwine are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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